In April 2021, Australia's .au Domain Administration Ltd (auDA) changed licensing rules. The organisation is responsible for developing and administering all .au domain names. One of their responsibilities is determining the eligibility criteria for registering a .au domain name. The changes to the .au Domain Name Licensing Rules have several implications for all .au namespaces such as .com.au; .net.au, and edu.au.
Let’s take a closer look at the changes affecting the .com.au domain names and how they may affect your business.
Trade Marks And The Australian Presence Requirement
One of the key eligibility criteria to hold a .au domain name, both under the old and new licensing rules, is that the registrant has what is referred to as an “Australian presence”. This means that the registrant generally needs to be registered in Australia or otherwise rely upon a registered or pending Australian trade mark.
This rule is to reserve the .au namespaces for those with actual business or personal connections to Australia. Under the old regime, a foreign business could meet this requirement by holding a registered (or pending) Australian trade mark that was an exact match of one, some or all the words, or an abbreviation or acronym of its trade mark.
So, for example, if a foreign company X held the registered trade mark for “Fizzy Bath Bombs”, they would have been eligible under the old rules to register domain names such as “FBB.com.au” or “Fizzy.com.au”.
The new rules require that the relevant domain name be an “exact match” of the registered trade mark. The exact match is defined to mean “all the words in the order in which they appear” in the trade mark, excluding DNS identifiers (e.g. “com.au”), punctuation marks, articles such as “a”, “the”, ‘and”, or “of”, and ampersands.
So, for the example above, the only trade mark that company X would be eligible to own would be “fizzybathbombs.com.au”. The changes apply to new Domain Name registrations, and existing Domain Name Registrations will only be impacted upon renewal.
If company X owned Fizzy.com.au before the licence rule amendments, it would be able to retain it only until the renewal date, after which date it will no longer be eligible.
For Australian entities, there is no requirement that their domain name is an “exact match” to a registered trade mark. Instead, their .com.au domain name must be a:
- match or acronym of the registrant’s name; or
- match or acronym of the name of a related body corporate, partnership or trust; or
- match of the registrant’s Australian trade mark registration or application; or
- match or synonym of the name of the registrant’s services; the registrant’s goods;
- an event the person registers or sponsors;
- an activity the person facilitates, teaches or trains;
- premises which the person operates.
A “match” can be partial (i.e. including one, some or all words or numbers), but the words must appear in the same order as in the registrant’s name or trade mark. The rules state there cannot be any additional words or numbers.
How The Changes Will Affect Companies
The licensing rules enable a company within a corporate group to register .com.au and domain names on behalf of another company in the group. However, the company on whose behalf the domain name is held must meet the Australian presence requirement, for example, as an Australian subsidiary.
These changes can significantly impact foreign businesses that have established a strong reputation over time under an existing .com.au domain name.
To keep their domain name, they will either have to establish an Australian presence in some other way (such as registering a local office or transferring licences to Australian based subsidiaries) or attempt to register an Australian trade mark which is an exact match of their existing domain name.
How Level Up Legal Can Help
We can assist you with a range of cost-effective dispute resolution processes, including mediation, arbitration, and domain names’ recovery through auDA and all other major domain dispute resolution forums. When litigation is unavoidable, we will help you work out a litigation strategy appropriate for your business with clear objectives and parameters.
Contact Level Up Legal, and we’ll get back to you shortly.